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Well Known Trademark Pierre Cardin Loses Final Battle in Indonesia Court

The long running dispute between Pierre Cardin (“Plaintiff”) and Alexander Satryo Wibowo (“Defendant”) finally reached its conclusion on 28 June 2018 (Supreme Court Decision No. 49 PK/Pdt.Sus-HKI/2018).

The Plaintiff filed for a cancellation action against the Defendant for the registered trademarks PIERRE CARDIN wordmark and PIERRE CARDIN device in class 3. The grounds were (1) similarity in particular and entirety to Plaintiff’s well-known mark, and (2) bad faith. The Defendant’s trademarks had been registered in Indonesia since 29 July 1977 by then proprietor Wenas Widjaja and had been renewed timely.

In June 2015, the Plaintiff lost before the Commercial Court (Commercial Court Decision No. 15/Pdt.Sus-Merek/2015/PN Niaga.Jkt.Pst), because the lawsuit was considered as out of time; it was submitted more than 5 years after the registration date. The Panel of Judges also decided that the applications for the Defendant’s trademarks were not in bad faith.

In November 2015, the Plaintiff’s appeal to the Supreme Court was also dismissed (Supreme Court No. 557 K/Pdt.Sus-HKI/2015). This was because the Defendant always stated the words “product by PT Gudang Rejeki” in its products as a differentiator thereby reinforcing the notion that it does not cling on to the fame of other brands.

In November 2017, the Plaintiff filed for a Petition of Reconsideration at the Supreme Court arguing that there had been new evidence found to support their case against the Defendant, and to overturn the earlier decisions of the Commercial Court and Supreme Court.

The Supreme Court rejected the petition on the grounds that it failed to comply with certain formal requirements. The formal requirements for filing a Petition of Reconsideration are that (1) it must be filed within 180 days commencing from the decision of the Supreme Court and (2) there is new evidence upon which the petition is relying on.

This case is important to trademark holders in Indonesia as it underscores the importance of complying with formal requirements in Indonesia. Failure to do so can prove to be extremely detrimental to the concerned party.

By Denise Mirandah

This article first appeared in the GALA Gazette Vol 14, Issue 1. For more information, please visit https://www.galalaw.com/Publication/publication.